DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 10/21/2025 with regards to the double patenting rejection have been fully considered but they are not persuasive, since the terminal disclaimer filed 10/21/2025 was disapproved on 10/24/2025 and no correction has been made. The terminal disclaimer appears to have been disapproved since the person who signed the terminal disclaimer is not the applicant, patentee or an attorney or agent of record, since there is no power of attorney on file for the application. The double patenting rejection is now updated with the issued Patent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 20, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 4, 21, and 22, respectively of U.S. Patent No. 12,385,570. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 4, 21, and 22 of U.S. Patent No. 12,385,570 “anticipate” Application claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 20, and 21, respectively. Accordingly Application claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 20, and 21 are not patentably distinct from Patent claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 4, 21, and 22, respectively.
Here, Patent claim 1 requires:
A multi-way valve comprising
a valve housing coupled to a manifold of thermal fluid circuits, the valve housing including a valve housing body, a first housing end cover coupled to a first end of the valve housing body, and a second housing end cover coupled to a second end of the valve housing spaced apart axially from the first end of the valve housing relative to a valve axis, the valve housing body shaped to define a first valve cavity, a second valve cavity in fluid communication with the first valve cavity, and a plurality of apertures that open into the first and second valve cavities, the first housing end cover coupled to the first end of the valve housing to close a first end opening to the first valve cavity, and the second housing end cover coupled to the second end of the valve housing to close a second end opening to the second valve cavity, and
a valve flow controller includes a first valve rotor arranged in the first valve cavity of the valve housing body and configured to rotate relative to the valve housing body about the valve axis, a second valve rotor arranged in the second valve cavity of the valve housing body and configured to rotate relative to the valve housing body about the valve axis, a first actuator coupled to the first valve rotor to drive rotation of the first valve rotor about the valve axis, and a second actuator coupled to the second valve rotor to drive rotation of the second valve rotor about the valve axis,
wherein the first and second valve rotors cooperate to define a plurality of flow paths when the first and second valve rotors are rotated about the valve axis to a plurality of different predetermined positions to control a flow of fluid through the valve housing, and
wherein the valve housing body includes an annular outer wall that extends around the valve axis to define a hollow space, a partition wall located in the hollow space of the annular outer wall to divide the hollow space into the first valve cavity and the second valve cavity, and a housing base that extends from the annular outer wall and formed to define the plurality of apertures, and wherein the partition wall is formed to include a connecting aperture in fluid communication with the first valve cavity and the second valve cavity of the valve housing body.
While, Application claim 2, requires:
A multi-way valve comprising
a valve housing coupled to a manifold of thermal fluid circuits, the valve housing including a valve housing body, a first housing end cover coupled to a first end of the valve housing body, and a second housing end cover coupled to a second end of the valve housing spaced apart axially from the first end of the valve housing relative to a valve axis, the valve housing body shaped to define a first valve cavity, a second valve cavity in fluid communication with the first valve cavity, and a plurality of apertures that open into the first and second valve cavities, the first housing end cover coupled to the first end of the valve housing to close a first end opening to the first valve cavity, and the second housing end cover coupled to the second end of the valve housing to close a second end opening to the second valve cavity, and
a valve flow controller includes a first valve rotor arranged in the first valve cavity of the valve housing body and a second valve rotor arranged in the second valve cavity of the valve housing body, the first and second valve rotors configured to rotate relative to the valve housing body about the valve axis, and
the first and second valve rotors cooperate to define a plurality of flow paths when the first and second valve rotors are rotated about the valve axis to a plurality of different predetermined positions to control a flow of fluid through the valve housing,
wherein the valve housing body includes an annular outer wall that extends around the valve axis to define a hollow space, a partition wall location in the hollow space of the annular outer wall to divide the hollow space into the first valve cavity and the second valve cavity, and a housing base that extends from the annular outer wall and formed to define the plurality of apertures, and wherein the partition wall is formed to include a connecting aperture in fluid communication with the first valve cavity and the second valve cavity of the valve housing body.
Thus, it is apparent that the more specific Patent claim 1 encompasses Application claim 2. Following the rationale in In re Goodman cited in the above paragraph, where Applicant has once been granted a patent containing a claim for the specific or narrower invention, Applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since Application claim 2 is anticipated by Patent claim 1 and since anticipation is the epitome of obviousness, then Application claim 2 is obvious over Patent claim 1.
Similarly, claims 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 20, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Patent claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 4, 21, and 22, respectively, for the same reason set forth above.
Allowable Subject Matter
Claims 19, 22, 24-26, and 28-33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Craig Schneider can be reached at 571-272-3607 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753